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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Alberto Aspesi & C. S.p.A. v. Marco De Riso

Case No. D2000 - 0855

 

1. The Parties

Complainant is Alberto Aspesi & C. S.p.A., Via Salvatore Quasimodo 32/34, 20025 LEGNANO (MILAN) ITALY. The Complainant’s authorized representative in this administrative proceeding is Bugnion S.p.A., Viale Lancetti 17, 20158 MILAN, ITALY.

Respondent is Marco de Riso, Via Bellotti Felice11, 20129 MILAN, ITALY.

 

2. The Domain Name(s) and Registrar

The domain names at issue are "aspesi.com" and "albertoaspesi.com"; hereinafter referred to also as the "Domain Names". The registrar is Network Solutions, Inc.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received a complaint (hereinafter the Complaint) on July 28, 2000 (by email) and on July 24, 2000 (hardcopy and exhibits). On July 27, 2000, the Center acknowledged receipt of the Complaint. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center.

On July 27, 2000, the Center transmitted via email to Network Solutions, Inc. a request for registrar verification in connection with this case. On August 1, 2000, Network Solutions, Inc. transmitted via email to the Center, Network Solutions, Inc.'s Verification Response, confirming that the registrant is Mr. Marco de Riso and that the domain names registrations are in "active" status.

Having verified that the Complaint satisfied all the formal requirements of the Policy and the Rules, the Center transmitted on August 4, 2000, to Mr. Marco de Riso the Notification of Complaint and Commencement of the Administrative Proceeding by post (with attachment), and by fax and email (without enclosures). On the same day, the Center transmitted via email, copies of the foregoing documents to the complainant’s representative and to Network Solutions Inc.

On August 25, 2000, having received no Response from the Respondent, the Center issued to both the postal and email addresses a Notification of Respondent Default.

No reply by Respondent to the Notification of Respondent Default was received.

On September 14, 2000, in view of the Complainant’s designation of a single member panel the Center invited Mr. Luca Barbero to serve as a panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.

Having received Mr. Luca Barbero's Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted on September 19, 2000 to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Luca Barbero was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel (hereinafter referred to also as the Panel) was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

Having reviewed the communication records in the case file, the Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel shall issue its Decision on the basis of the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from Respondent.

 

4. Factual Background

The Complaint is based upon the following trademark registrations and applications:

Italian Registration N. 544789 of May 6, 1991 "ASPESI", class 18, filed on April 5, 1991

British Registration N. 1471382 of January 22, 1993 "ASPESI", class 25, filed on April 5, 1991 (renewal granted March 30, 1998)

Japanese Registration N. 2671421 of May 31, 1994 "ASPESI", class 17, filed on September 13, 1991

Canadian Registration N. TMA 408 751 of February 26, 1993 "ASPESI", class 25, filed on April 25, 1991

Japanese Registration N. 21703885 of February 28, 1995 "ASPESI", class 17, filed on February 17, 1992

Swiss Registration N. 465 791 of October 21, 1999 "ASPESI", classes 3-9-18, filed on March 3, 1999

International Registration N. 569 461 of May 6, 1991 "ASPESI", class 25, filed on April 5, 1991

Japanese Registration N. 4328158 of October 22, 1999 "ASPESI", classes 3-9-18, filed on March 19, 1999

International Registration N. 460 181 of March 30, 1981 "ALBERTOASPESI", class 25, filed on March 30, 1981

International Registration N. 592 617 of October 16, 1992 "ALBERTO ASPESI", class 18, filed on June 30, 1992

British Registration N. 1 201 752 of August 16, 1983 "ALBERTO ASPESI", class 25 (renewed on August 16, 1990)

Italian Registration N. 326157 of March 30, 1981 "ALBERTO ASPESI", class 25, (renewed on January 25, 2000)

United States Registration N. 1220067 of December 14, 1982 "ALBERTO ASPESI", class 25 filed on March 17, 1981

Japanese Registration N. 2598145 of November 30, 1993 "ALBERTO ASPESI", class 17, filed on September 13, 1991

Italian Registration N. 578538 of October 16, 1992 "ALBERTO ASPESI", class 18, filed on June 30, 1992

Japanese Registration N. 3041918 of April 28, 1995 "ALBERTO ASPESI", class 18

Canadian Registration N. TMA 419 879 of November 19, 1993 "ALBERTO ASPESI", class 18, filed on July 30, 1992

British Registration N. 1509505 of June 30, 1992 "ALBERTO ASPESI", class 18, renewed on June 30, 1999

United States Registration N. 1 861 800 of November 8, 1994 "ALBERTO ASPESI", class 18

Aspesi.com was registered on September 28, 1997 and albertoaspesi.com was registered on September 29, 1997. According to Network Solutions, Inc.'s Verification Response, Mr. Marco de Riso is the registrant of both "aspesi.com" and "albertoaspesi.com".

 

5. Parties’ Contentions

A. Complainant

Complainant contends that Respondent has registered the Domain Names which are identical to Complainant's trademarks and states that Respondent has no interests and has made no use of both the above identified Domain Names.

Complainant alleges that the domains have been filed by the Respondent in bad faith because the Respondent has filed both "aspesi.com" and "albertoaspesi.com" indicating the second being not only a Trademark but also the personal name of Mr. Alberto Aspesi well known Italian fashion stylist and legal representative of the Complainant, deriving from such a conduct the Respondent’s intent to create some damage just to the Complainant.

Furthermore, the Complainant informs the Panel that the Respondent had been already approached by the Complainant and replied indicating that: he had no intention to use the Domain Names "aspesi.com" and "albertoaspesi.com" and that some settlement could have been possible by contacting his lawyer this implicitly meaning a money agreement and therefore bad faith.

According to the Complainant, the above circumstances clearly indicate that the domain name registrations were acquired by the Registrant only for the purpose of sale and certainly not in connection with a bona fide offering of goods and/or services.

In view of the Complainant, Respondent was aware of the fame of the trademarks Aspesi and Alberto Aspesi which are fashion trademarks well known for many years at least in Italy, Europe, United States and Japan.

Consequently, Complainant requires the transfer of the contested Domain Names to the Complainant.

B. Respondent

Respondent has not contested the allegations of the Complainant and is in default.

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and,

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,

(iii) that the Domain Name has been registered and is being used in bad faith.

6.1. Domain name identical or confusingly similar

The Complainant has provided evidence of ownership of various trademark registrations and applications for ASPESI and ALBERTO ASPESI in different countries.

In view of the above, the Panel finds that the Complainant has proved that the Domain Names are identical, obviously excluding the suffix ".com", to the trademark of the Complainant according paragraph 4(a)(i) of the ICANN Policy.

6.2. Rights and legitimate interest

By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Names.

Furthermore, there is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor the Respondent has otherwise obtained an authorization to use Complainant’s trademark and name under any circumstance.

The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the Domain Names.

6.3. Registration and Use in Bad Faith

For the purpose of Paragraph 4(a) (iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Names in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.

The Complainant has produced in the annexes of the Complaint, a copy of a letter received from the Respondent on December 9, 1997, as a reply to a formal request to relinquish the Domain Names. The Respondent refused to comply on the basis, at the time, of the following arguments:

a) "I have never used the web sites corresponding to albertoaspesi.com and aspesi.com as alleged by you, as I have merely registered the Domain Names".

b) "Moreover, as you well know, domain name registration is granted only in case the Domain Names are available i.e. not registered by other parties".

c) "Therefore, my application is not only lawful but obviously possible notwithstanding the existence of the trademark ALBERTO ASPESI".

d) "The above being stated, considering anyway possible an amicable solution of the instant matter, I invite you to get in touch with my lawyers at the following address (…)"

The Panel from the wording of the letter considers fair to infer that the Respondent has acquired the domain names in bad faith primarily for the purpose of selling the domain name registrations to the Complainant for valuable consideration, being aware of the fact that ALBERTO ASPESI and ASPESI were registered trademarks.

As the Panel is not limited to find and evaluate only the above listed circumstances as evidence of bad faith, an additional check was conducted. It was ascertained that, at the time of the drafting of the present decision, both Domain Names are presently active. They point at web pages where the wording "under construction" is shown at the top, followed by the indication "This domain is unavailable & will soon become a web site. Please check back". It should be noted, though, that in the same home pages the domain name registration services of the maintainer are advertised and a tool to reserve, and ultimately purchase, domain names is available.

It cannot be excluded that such commercial activity was intentionally requested or authorized by the Respondent and that a commercial gain is generated also for the Respondent. Said commercial activity has been going on at least for all the time that the Panel has reserved to prepare the present decision. The Panel finds that such web sites de facto may attract Internet users seeking information about the Italian Fashion Stylist Alberto Aspesi and are likely to create confusion as to the source, sponsorship, affiliation or endorsement by the Complainant.

In view of the above, the Panel finds that Respondent has registered and is using the Domain Names in bad faith.

 

7. Decision

In light of the foregoing, the Panel decides that the Domain Names registered by the Respondent are identical to the Complainant's trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names have been registered and are being used in bad faith.

Accordingly, the Panel requires that the registration of the Domain Names "aspesi.com" and "albertoaspesi.com" be transferred to the Complainant.

 


Luca Barbero
Sole Panelist

Dated: October 12, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0855.html

 

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